As of January 1, 2017, Dr. Rothstein has limited his practice to providing Orthodontic Jaw Wiring for Weight-Control: OJW®: Weight-control. He provides this service in Brooklyn, NY and will soon announce a new office location in Portland,OR where the Oregon Board of Dentistry on June 23 created history by ruling that Dental Professionals are at liberty to Provide Weight-control services. See www.ojwforweightcontrol.com
Contact: 718 808 2656; drted35@gmail.com

OJW ORTHODONTIC JAW WIRING Trademark Application

In a nutshell: I filed the application November 12, 2010, and in short order received a notice that my application had been received. On March 14, 2011 the examining patent office attorney responded indicating that the mark “OJW” was not in conflict with any other mark and therefore was in fact capable of being registered, However…

The United States Patent and Trademark* office has made enormous technological advances in how it processes applications for patents and trademarks. Indeed by far and away the entire process can now be done online. However, the learning curve for applying online is still kind of steep for the uninitiated. Perhaps it might even be said that fools rush in where angels fear to tread. If fees are not an impediment I would recommend retaining an attorney with much experience in trademark registration. Nevertheless, having said that I decided to submit my application “Pro Se” i.e., to represent myself. Consequently, on November 12, 2010, I completed and submitted my application online and paid the modest fee of $275.

You are welcome to follow along and see how my application is progressing: (http://tarr.uspto.gov/ Serial # 85192818)

In a nutshell: I filed the application November 12, 2010, and in short order received a notice that my application had been received. On March 14, 2011 the examining patent office attorney responded indicating that the mark “OJW” was not in conflict with any other mark and therefore was in fact capable of being registered. However, I was issued a “DESCRIPTIVE REFUSAL” based on the examiner’s opinion that OJW (Orthodontic Jaw Wiring) was “merely descriptive”. Moreover the examining attorney indicated that I must provide her with the answers to three questions (see below( “REQUIREMENT FOR INFORMATION”. My response to her “refusal” to accept my mark and the answers to her questions were submitted March 29, 2011 (see below). You can see the “TMEP” laws that govern all the decisions that examiners make in the trademark office: Trademark Manual of Examining Procedure (TMEP)See especially TMEP §§1209.01(b), 1209.03 et seq.

If the examiner responds to my letter with a “Final Refusal” I will have to decide whether I want to “APPEAL” the case to the next higher committee using the services of an attorney who will be costly, or just “abandon” my effort to register the mark. In the meantime it is permissible to use the mark TM as it appears thusly. OJWTM **.

You may have noted that in my application I filed for a trademark registration in what is known as the “PRINCIPLE” register (as in when you want to play “hardball”). In essence, this permits the owner of his/her mark to sue anyone who infringes the mark for monetary damages.

However, there is anther register called the “SUPPLEMENTAL” register which permits you to register your mark WITHOUT the right to sue for monetary damages if another infringes on the use of your mark (here you are playing “soft ball” so to speak) In essence there remains the possibility that I will be permitted to register OJW in this “alternative” register.

Finally, even though your examiner may issue you a FINAL REFUSAL you may be offered the right to claim that your mark is worthy of being registered by virtue of the fact that the mark (OJW) has been used for more than five years (OJW has been used more than 10 years) and has “ACQUIRED DISTINCTIVENESS”

The examiner is required to respond in about eight weeks.

Pending the outcome of this patent application, which I hope will be in my favor, and consequently permit me to place the coveted ® after my mark OJW, I will have to be content for now to have the magic of OJW™

Your trademark application (Serial No. 85192818) has been reviewed. The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 3/14/2011 to which you must respond. Please follow these steps:

1. Read the Office letter by clicking on this link OR go to http://tmportal.uspto.gov/external/portal/tow and enter your serial number to access the Office letter.

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

2. Respond within 6 months, calculated from 3/14/2011 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov.

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

tfletcher

/Tracy L. Fletcher/

Examining Attorney

Law Office 115

U.S. Patent and Trademark Office

Telephone: (571) 272-9471

Facsimile

WARNING

Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses. Instead, please use the Trademark Electronic Application System Response to Office Action form.

Telephone: (571) 272-9471

Facsimile

WARNING

Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.
Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses. Instead, please use the Trademark Electronic Application System Response to Office Action form.

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE: 3/14/2011

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

The wording OJW refers to orthodontic jaw wiring. Applicant states in the application that “OJW appearing in the mark means or signifies Orthodontic Jaw Wiring for Weight Contro (sic) in the relevant trade or industry or as applied to the goods/services listed in the application” and that “The OJW mark encompasses the application of a dental apparatus that limits mouth opening in the treatment of obesity.” Please also see attached dictionary definition and web pages defining the term OJW. The web pages discuss the orthodontic procedure OJW in which a patient’s mouth is wired shut in order to enforce a liquid diet for the purpose of losing weight. For this reason, the wording OJW merely describes a feature of the identified weight loss services. Accordingly, the mark OJW is merely descriptive of the services and registration must be refused.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

Applicant must respond to the requirement(s) set forth below.

REQUIREMENT FOR INFORMATION

Applicant must provide additional information about the mark to enable proper examination of the application. See 37 C.F.R. §2.61(b); TMEP §814 Specifically, applicant must respond to the following questions: Is the term OJW the common commercial name for a medical and/or dental and/or orthodontic procedure comprising jaw wiring for weight loss? Does the wording OJW refer to a kind or type of medical and/or dental and/or orthodontic procedure? Does the wording OJW refer to a kind or type of weight loss service?

Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

RESPONSE GUIDELINES

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).

Applicant may wish to hire an attorney to assist in prosecuting this application because of the legal technicalities involved. The Office, however, cannot aid in the selection of an attorney. 37 C.F.R. §2.11. Applicant may wish to consult a local telephone directory for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from a local bar association attorney-referral service.

CLOSING

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

/Tracy L. Fletcher/

Examining Attorney

Law Office 115

U.S. Patent and Trademark Office

Telephone: (571) 272-9471

Facsimile: (571) 273-9471

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/teas/eTEASpageD.htm. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.

DR. ROTHEIN’S RESPONSE

We have received your Response to Office Action Form below.

To the Commissioner for Trademarks:
Application serial no. 85192818 (OJW) has been amended as follows:

ARGUMENT(S)In response to the substantive refusal(s), please note the following:

Merely descriptive

OJW is intended to identify in the market a novel weight loss procedure which I have devised. The acronym “OJW” refers to the words “orthodontic jaw wiring”, which is what the weight loss procedure is based on.

A1.The word “orthodontic” typically refers to straightening teeth. Not so in my mark. ‘‘Orthodontic” refers to the use of brackets attached to the teeth (known to the lay public as “braces”) to effectuate interlacing of the upper and lower jaw to limit how far apart they may be parted. And A2. To connote that the patient is required to return to the office at a frequency similar to the frequency at which an orthodontic patient would be required to return.

B. The “Jaw wiring” part of procedure is also suggestive: the jaw wiring done by oral surgeons, “Intermaxillary Fixation” (IMF), describes a procedure and device that oral surgeons use to wire the upper and lower teeth tightly together. OJW and IMF are structurally and functionally distinctly different.

Question 1: Is the term OJW the common commercial name for a medical and/or dental and/or orthodontic procedure comprising jaw wiring for weight loss?

No. OJW is an acronym for, and refers to the weight loss procedure I devised dating back to before 2002. It stands for the words Orthodontic Jaw Wiring. OJW is not the common name for a procedure comprising jaw wiring for weight loss in the dental and medical and orthodontic industry. The acronym OJW refers specifically and solely to the weight loss procedure that I devised. I utilized that acronym in referring to that procedure as I publicized it particularly by means of my web site and the facility of the world wide net. The term has acquired its meaning as a weight loss procedure, because I have written about the results of performing that procedure on my patients. The literature describing this procedure that appears on the internet has been written by me or about me and refers only to me as the inventor and sole provider of the procedure. OJW identifies the procedure to assist patients in controlling their compulsive overeating. In my profession it is understood and published (see examiner’s attachments 3-6 and 7-10) that the OJW refers to a special weight loss technique I devised and have made known to dental professionals and the public by virtue of publications of videos on YouTube, publications on my web site and online magazines, a full length documentary film aimed at informing dental professionals about the procedure, and presentations to dental groups and at major dental meetings.

Question 2: Does the wording OJW refer to a kind or type of medical and/or dental and/or orthodontic procedure?

I created the term “OJW” (Orthodontic Jaw Wiring) to identify the weight loss procedure which I formulated to assist people who are overweight/obese control “compulsive overeating”. Moreover, the acronym “OJW” has no meaning or reference to any other weight loss procedure available in the world of medicine, dentistry or in the specialty of orthodontics other than the procedure that I provide. OJW refers to no other procedure or any other doctor other than myself. The term has become known as a distinctive reference to the specific jaw wiring procedure for weight loss because I promoted the use of the acronym on my frequently visited web site drted.com. Moreover, I have written extensively about the procedure including the article I wrote cited in the examiner’s attachments 5, 6 and 7 and in the article cited in examiner’s attachments 8, 9, 10, 11 and 12 and other venues listed in my response to question 1. Most importantly the term OJW has gained currency as a weight loss procedure for obese patients who have been given permission to lose weight by a long term low-calorie liquid diet such as OJW supports and promotes.

Question 3: Does the wording OJW refer to a kind or type of weight loss service?

Yes, The wording OJW referring to Orthodontic Jaw Wiring is sui generis and refers to one thing alone and that is a particular kind of procedure that I offer to assist overweight/obese persons control compulsive overeating in an attempt to either maintain a desired weight or lose weight by eating a low-calorie, liquid-diet over the long term.

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either (1) the applicant or (2) a person(s) with legal authority to bind the applicant; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

* What is Intellectual Property?
Just like there are laws to protect physical property such as the land your house/apartment/condo is on, there are also laws to protect intangible property such as written expressions, inventions, slogans, etc. This type of intangible property, known as intellectual property, falls into four general categories – for more information on these categories of Intellectual Property, please select a QuizLaw topic below.

What does the TM symbol mean?
The symbol ™ is used to indicate that a word, phrase, logo or design is treated as a trademark by the party – that is, that the party claims rights in the mark. The trademark does not need to be federally

**How to use the ® and TM Symbol

Can I legally use the TM symbol before I apply for a trademark registration?

There are two symbols commonly used to mark trademarks: ® and ™.

The ™ symbol may be used whenever a company wants to indicate any mark that they consider to be a trademark. A company need does not need to file any paperwork or receive permission to use the ™ symbol. Use of the ™ symbol can put your competition on notice that you consider a mark your trademark.

The ® symbol may ONLY be used AFTER the US Government grants a Federal registration certificate. The ® symbol may not be used while the Federal application is pending. Additionally, the ® symbol may only be used in connection with the goods and services listed on the registration certificate.

When using your trademark, place it prominently, so people will notice it. When using your trademark in printed text, use bold, italic, UPPERCASE, or a different font to differentiate your trademark from other, surrounding words. Try to use your trademark as an adjective and not as a noun. For example, “Be hip, show style, wear NIKE® shoes”.

Either symbol is usually placed to the upper right of the word, logo or other mark. Sometimes companies list the trademarks used in the material along with the owner in the footer of their website or the bottom of a printed page. For example, “Coca-Cola® and the contour bottle are registered trademarks of The Coca-Cola Company.” Remember, do not claim that your trademark is registered unless it is actually registered with the US Trademark office (www.uspto.gov). Only marks that have been filed, approved and granted the ribbon-original registration certificate by the US Trademark Office may claim to be registered in the US.

By always using the correct trademark symbol whenever you use your trademark, your competitors should be put on notice of your trademark, which lets them respect your intellectual property. Likewise, you can prevent your customers from becoming confused by always respecting the trademarks of others, whether they use the ® or ™ symbol.

What does c with a circle around it mean?

It is the symbol that indicates copyright. Copyright means the owner has control of the item and can determine how it is distributed. The Constitution of the US establishes the Copyright Office and the protection of these rights. International Copyright laws are getting better and are being enforced globally.